The regular article tracking developments at the national level in key European countries in the...

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European national news

The regular article tracking developments at the nationallevel in key European countries in the area of IT andcommunications – Co-ordinated by Herbert Smith LLPand contributed to by firms across Europe

Mark Turner, Tim Gunn

Herbert Smith LLP, London, UK

0267-3649/$ – see front matter ª 2008 Herbedoi:10.1016/j.clsr.2008.07.011

a b s t r a c t

This column provides a concise alerting service of important national developments in key

European countries. Part of its purpose is to complement the Journal’s feature articles and

Briefing Notes by keeping readers abreast of what is currently happening ‘‘on the ground’’

at a national level in implementing EU level legislation and international conventions and

treaties. Where an item of European National News is of particular significance, CLSR may

also cover it in more detail in the current or a subsequent edition.

ª 2008 Herbert Smith LLP. Published by Elsevier Ltd. All rights reserved.

1. Belgium mark AERIS was still valid on 7 December 2005. However, the

1.1. Brussels Court of First Instance finds that EURID ispermitted but not obliged to conduct its own investigation ofa .eu domain name application beyond the documentaryevidence filed

On 7 December 2005, the licensee of the German trade mark

‘‘AERIS’’ filed with EURID (the European registry for .eu

domain names) an application to register the domain name

‘‘aeris.eu’’ based on this trade mark, which had been regis-

tered on 20 June 1991 and renewed on 12 July 2000 by its

licensor with the German Patent and Trade Mark Office.

However, on 29 March 2006, EURID refused to register the

domain name, arguing that the licensee failed to prove that

the trade mark was still valid on the date of the licensee’s

request.

The licensee on 8 May 2006 filed an appeal against EURID at

the Czech Arbitration Court (‘‘CAC’’). In that procedure, the

licensee submitted an excerpt from the official data of the

German Patent and Trade Mark Office showing that the trade

rt Smith LLP. Published b

CAC dismissed the appeal on the same grounds as EURID.

The licensee subsequently on 21 September 2006 appealed

the CAC’s decision at the Court of First Instance of Brussels.

The latter too dismissed the appeal.

First, the Court found that the licensee had failed to prove

in a timely manner that the trade mark had been renewed

pursuant to Article 13.2 of the Sunrise Rules. According to this

Article it is required to submit a copy of an official document

issued by the competent Trade Mark Office showing that the

trade mark is registered and that it has been renewed. The

licensee had not submitted such renewal certificate.

Second, based on Article 14.7 of EU Regulation 874/2004,

the licensee argued that EURID had an obligation to conduct

an investigation of the trade mark’s validity beyond the

documentary filed by the licensee. However, the Court did not

agree, because:

� Articles 14.4 and 14.10 of EU Regulation 874/2004 imply that

the burden of proof of the trade mark’s validity and renewal

rests with the applicant.

y Elsevier Ltd. All rights reserved.

http://www.compseconline.com/publications/prodclaw.htm

c o m p u t e r l a w & s e c u r i t y r e p o r t 2 4 ( 2 0 0 8 ) 3 9 6 – 4 0 0 397

� Article 13.2 of the Sunrise Rules explicitly provides that

EURID’s investigation is exclusively based on a prima facie

assessment of the documentary evidence submitted by the

applicant.

� Article 21.3 of the Sunrise Rules explicitly provides that

EURID is permitted in its sole discretion to conduct its own

investigations, but is not obliged to do so.

� Given the high number of domain name applications, it

would be neither practical nor reasonable to expect from

EURID pro-actively to conduct an investigation if the docu-

mentary evidence filed is incomplete.

The case can be found in IRDI 2008, p. 216.

Erik Valgaeren, Partner [email protected] and Lien

Ceulemans, Associate [email protected] from the

Brussels Office of Stibbe (Tel. þ32 2 533 53 51).

2. Denmark

2.1. Danish Act on use of non-solicitation clauses hasnow been passed

It has been common practice to use so-called non-solicitation

clauses in Danish business agreements, including in particular

contracts for the supply of IT services. A non-solicitation clause is

in this context typically an obligation on an acquirer of services or

thesellerofabusinessnottoemploytheemployeesoftheprovider

of such services or the employees relating to the transferred

business, respectively. However, following much attention in the

media, the Act on employers’ use of non-solicitation clauses (the

‘‘Act’’) has now been passed. The Act applies to all employees, i.e.

both salaried employees and blue-collar workers.

The Act came into force on 1 July 2008. The main purpose of the

Act is to restrict and reduce the use of non-solicitation clauses and

to ensure that the clauses will be entered into in a fair and loyal

manner only. In general, the Act provides that an employer is

prohibited from secretly and without any recompense to use non-

solicitation clauses, which limit the employee’s opportunities of

entering into a new position after his resignation.

Non-solicitation clauses are therefore only legally valid if

the following two conditions are met:

1. The employer and the employee must have entered into

a written agreement regarding such non-solicitation

clause. The agreement shall include detailed information

on how the non-solicitation clause limits the employee’s

employment opportunities, for how long these conditions

apply, and the right to compensation.

2. The employer must pay a financial compensation to the

employee, equivalent to at least 50% of the employee’s

salary at the time of resignation, until the employee obtains

other appropriate employment and the former employer is

entitled to deduct such income from the compensation.

However, there are exceptions to these two conditions, e.g.

if the non-solicitation clause is entered in connection with

negotiations for the transfer of a business.

The Danish Parliament has decided to enforce the Act with

a delayed retroactive effect. From 1 July 2008, the Act applies

to all non-solicitation clauses agreed from that date. However,

from 1 July 2009, the Act will also apply to non-solicitation and

no-hire clauses agreed prior to the Act’s enforcement. This

means that current non-solicitation clauses will all be

declared invalid from 1 July 2009, as they do not meet the legal

requirements.

Therefore, in future, any employer that wishes to obtain

a non-solicitation clause regarding its employees will, in

practice, be required to enter an agreement with all employees

that are subject to the clause. This places a considerable

practical and financial burden on any such employer.

Carsten Raasteen, Partner, [email protected] and Daniel

Herman Roejtburg, Assistant Attorney, drb@kromannreumert.

com from Kromann Reumert, Copenhagen Office, Denmark (Tel.

þ45 70 12 12 11).

3. France

3.1. Louis Vuitton attacks eBay: luxury fine for luxuryfakes

On 30 June 2008, the Paris Commercial Court delivered three

striking decisions hitting both eBay Inc. and eBay Interna-

tional AG with a V38 million fine (aggregated amount) in

favour of Louis Vuitton, Christian Dior and four of LVMH’s

other well-known subsidiaries in the perfume industry.

Louis Vuitton and Christian Dior took legal action against

the online auctioneer eBay for its failure to ensure that its

activities did not trigger illegal acts endangering their

economic activities and for publishing advertisements

favouring copyright infringement. The four perfume compa-

nies sought eBay’s conviction on the grounds that their

selective distribution networks were undermined by the

parallel trade of its products on and by eBay.

eBay alleged that it should benefit from the exclusion of

liability principle for intermediaries set out in Article 6 of the

law dated 21 June 2004 which states that the liability of tech-

nical intermediaries, and in particular that of hosting services

providers, cannot be sought for content made available

through their services, unless they have been informed of the

unlawful activities or content and fail to react promptly.

Moreover, eBay responded that its activity is fully compliant

with French laws and regulations, and highlighted the

investment it has made in creating its ‘‘Vero security

program’’ which aims to protect owners of intellectual prop-

erty rights.

The Commercial Court rejected all of the online auction-

eer’s defences and heavily condemned eBay, finding that its

status did not correspond to that of a hosting services provider

according to the terms of the 2004 law, and that eBay

committed serious offences by failing in its obligation to

ensure that its activity did not trigger unlawful acts to the

prejudice of the plaintiffs. The Court awarded damages to the

claimants for exploitation of their rights, for the harm caused

to their image and for moral misconduct.

mailto:[email protected]






The whole electronic trade industry could be undermined by

these decisions, leaving eBay, its fellow competitors and other

Web 2.0 platforms vulnerable to numerous lawsuits despite

genuine efforts being made to track down copyright infringement.

These three decisions may not, however, signify the end of

a highly controversial debate that has given rise to diverging

French case law on similar matters involving eBay (Paris Court of

Appeal, 9 November 2007; Grenoble District Court, 1st February

2007) and, on an international level, the exact opposite ruling was

issued in the recent US District Court of New York ruling that

rejected the claim brought by Tiffany’s (15th July 2008).

Following eBay’s appeal against the three decisions, it will

be up to the Paris Court of Appeal and probably later the

French Supreme Court to determine the final outcome.

Alexandra Neri, Partner [email protected] and

Olivier Menant, [email protected] from

the Paris Office of Herbert Smith LLP (Tel. þ33 1 53 57 74 02), with

the contribution of Alexandre Vasseur.

4. Italy

4.1. Italy implements the EU Directive on data retention

By means of Legislative Decree No. 109 of 30 May 2008 (the

‘‘Decree’’), Italy has implemented Directive 2006/24/EC (the

‘‘EU Directive’’) on the retention of data generated or pro-

cessed in connection with the provision of publicly available

electronic communications services or of public communi-

cations networks. The Decree partially modifies the Italian

Privacy Code (Legislative Decree No. 196 of 2003) in relation to

the required period of traffic data retention by providers.

Specifically, Article 132 of the Italian Privacy Code, as amen-

ded, provides that, for the purpose of detecting and sup-

pressing criminal offences, telephone traffic data shall be

retained by the provider for 24 months from the date of the

communication, whereas electronic communications traffic

data (except for the content of communications) shall be

retained by the provider for 12 months from the date of

the communication.

In addition, data concerning unanswered calls, temporarily

processed by providers of publicly available electronic

communications services or providers of public communica-

tions networks, shall be retained for a period of 30 days.

Breach of such provisions by providers may result in a fine

ranging from Euro 10,000 to Euro 50,000. Furthermore, in the

case of an assignment of an IP address which does not

unambiguously identify the user or the subscriber, a fine

ranging from Euro 5000 to Euro 50,000 shall apply. These

maximum amounts may be increased up to three times if they

are found to be ineffective on account of the offender’s

economic status.

The Decree, in compliance with the EU Directive, also

provides for the categories of data to be retained and for an

obligation on providers to inform, on a yearly basis, the Italian

Ministry of Justice (which will in turn forward this information

to the EU Commission,) of: (i) the number of cases in which

telephone and electronic communications traffic data were

provided to the competent authorities in accordance with

applicable national law; (ii) the time elapsed between the date

on which the data were retained and the date on which the

competent authority requested the transmission of the data;

and (iii) the cases where requests for data could not be met.

http://www.parlamento.it/leggi/deleghe/08109dl.htm.

Salvatore Orlando, Partner, [email protected] and

Stefano Bartoli, Senior Associate, [email protected]

from the Rome Office of Macchi di Cellere Gangemi (Tel. þ39 06

362141).

5. The Netherlands

5.1. The Dutch home copy fee

In the Netherlands a surcharge is levied on all blank copying

media to compensate (intellectual) rights holders for the loss

suffered in relation to home copying. Twenty stakeholders

(among which are Fuji, Nashua, Philips and Sony) started

proceedings regarding the determination of this home copy

fee against ‘Stichting Thuiskopie’ (the Dutch home copy

association) and ‘Stichting Onderhandelingen Thuiskopie-

vergoeding’ (the Dutch foundation for negotiations regarding

the home copy fee, hereafter ‘‘SONT’’). On 25 June 2008 the

District Court of The Hague gave its judgment.

In these proceedings the stakeholders claimed a declara-

tory judgment on 16 aspects which should be taken into

account when determining the copy fee and claimed that the

home copy fee should be determined taking into account the

loss referred to above.

The District Court first of all ruled that it cannot determine

the home copy fee because the Dutch Copyright Act states

that SONT is the designated competent authority. Further-

more, it rejected 15 of the 16 points for which a declaratory

judgment was asked.

The declaratory judgment that was awarded relates to

material that is made public with the explicit or implicit

consent of the rights holder. The District Court ruled that,

when determining the home copy fee, no consideration

should be given to material for which the rights holder has

given its explicit or implicit consent. The District Court gave

an example of this: if a rights holder releases material on the

Internet without technical protection measures, this can

constitute implicit consent.

Furthermore, the District Court ruled that copying from an

illegal source is not permitted pursuant to the Dutch Copy-

right Act (Article 16c). This is noteworthy because it contra-

dicts declarations made by the Minister of Justice on this topic.

This ruling has taken everybody by surprise and has

therefore generated a lot of questions and criticism in the

Netherlands. It will be interesting to see what consequences

this ruling will have in the (near) future.

Link (in Dutch only): http://www.boek9.nl/getobject.

aspx?id¼4790.



http://www.parlamento.it/leggi/deleghe/08109dl.htm



http://www.boek9.nl/getobject.aspx?3Fid=3D4790



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Reinout Rinzema, Partner, [email protected] and

Rembrandt Brouwer, Associate, [email protected]

from the Amsterdam Office of Stibbe (Tel. þ31 20 546 01 12).

6. Norway

6.1. The Data Retention Directive might lack EEArelevance

The new Data Retention Directive (Dir. 2006/24/EC) has been

subject to extensive public debate, with business participants,

administrative authorities, politicians as well as private indi-

viduals expressing their concern. The latest Norwegian

development is the publication last month of a legal state-

ment by two distinguished Norwegian professors on European

law, Dr Finn Arnesen and Dr Fredrik Sejersted, questioning the

relevance of the Directive to the EEA-Agreement.

The statement was obtained by the trade organisation for

the Norwegian ICT industry in order to clarify the legal aspects

of the issue, and concludes that the Directive might not be EEA

relevant. It is argued that, although the Directive was enacted

by the EU with legal basis in Article 95 of the EEC Treaty

(concerning harmonisation of trade amongst EC Member

States and establishment of the internal market), the purpose

of the Directive is not primarily to facilitate free trade. On the

contrary, the core content and the purpose of the Directive

relate to the fight against crime – an objective falling outside

the scope of the EEA-Agreement. If the Directive is included in

the EEA-Agreement, it would represent an expansion of the

EEA-Agreement’s scope of application. Conversely, there are

nevertheless valid grounds on which it could be argued that

the Directive actually is EEA relevant.

The Government has not yet taken a stand in this respect,

and the Norwegian Minister of Transport and Communica-

tions has pronounced that one should await the outcome of

a case which Ireland has brought before the European Court of

Justice (case No. C-301/06). In this case, Ireland asserts that the

Directive is invalid because it has been enacted on an incor-

rect legal basis.

A possible implementation of the Directive into Norwegian

law is therefore unlikely to take place this year.

Stein-Erik Jahr Dahl, Associate, [email protected] and Ingvild

Standal Næss, Associate, [email protected]: Thommessen

Krefting Greve Lund AS (Tel. þ47 23 11 14 94).

7. Spain

7.1. The battle over intellectual property rights in Spain

A recent report from the United States Trade Representative,

as well as statistics from associations such as the Business

Software Alliance and Promusicae, show that Spain has one of

the highest audiovisual piracy rates among Western coun-

tries. This fact, according to industry representatives,

provokes losses in the order of millions of Euros and inhibits

the creation of new jobs in the software sector.

An explanation for this situation may be the historically

marginal value attributed to intellectual property rights in

Spain and the lack of judicial willingness to punish infringe-

ment, especially in the criminal jurisdiction.

Moreover, since the adoption of the Public Prosecutors

Intellectual Property Directive 1/2006, Spanish public prose-

cutors consider that copying and distribution of audiovisual

works are not criminal acts, unless they give rise to profit on

a commercial scale. This assumption has led public prosecu-

tors to take a passive attitude in some criminal proceedings.

Accordingly, producers in the audiovisual content sector are

left to launch private actions. These have resulted in a series

of unsuccessful judicial decisions.

In a similar vein, a wide interpretation by Spanish Courts of

the legal concept of users’ private copying right has led to a kind

of legitimacy, as far as private users are concerned. In most

cases, it seems that the Court is willing to condone storage in

their computers and recordable devices of a large number of

unauthorised copies of all kinds of audiovisual content.

Possibly because of this judicial reluctance to punish

infringement by end-users, the main Spanish content

producers have recently decided to launch an unfair compe-

tition civil action against a software company specialising in

creating software for peer-to-peer (‘‘P2P’’) platforms. The

companies have based their action (which is in the order of

millions of Euros) on their claim that P2P platforms offer to the

public music in which copyright subsists, without any

authorisation, with the aim of attracting visitors and gener-

ating benefits from publicity.

The outcome of this claim may determine future condi-

tions for P2P platforms in Spain while defendants and

contributors to Internet users’ forums advocate freedom to

share knowledge and content, the industry talks about large

scale financial losses. The battle continues.

Jorge Llevat, Partner [email protected] and Jon Cam-

pins, Associate [email protected] from the Barcelona

office of Cuatrecasas (Tel. þ34 93 290 55 85).

8. Sweden

8.1. New Signal Surveillance Act

On 18 June 2008, the Swedish Parliament enacted a new Signal

Surveillance Act (the ‘‘Act’’) which will come into force on 1

January 2009. The Act entitles the National Defence Radio

Establishment (‘‘FRA’’) to collect electronic signals trans-

mitted over air or by wire for defence intelligence purposes.

Pursuant to the Act, FRA will have access to communications

from telecoms operators as from 1 October 2009. Pursuant to

an amendment in the Electronic Communications Act, the

telecoms operators are obliged to collect, store and transmit

crossborder communications to certain co-ordinated points,

in order to make the signal surveillance more efficient.

The Act contains a number of provisions designed to

protect the integrity of the individual. Moreover, the Parlia-

ment announced the introduction of further control mecha-

nisms and mechanisms to ensure the rule of law applies to the




mailto:[email protected]:




Government, to increase the protection of individuals further.

Furthermore, the Act will be supplemented with provisions

regarding the purposes for which signal surveillance may be

conducted within the framework of the new legislation and

how the licensing procedure is to be administered.

However, on 14 June 2008 the new legislation was reported

by individuals to the European Court of Human Rights in

Strasbourg. The applicants are of the opinion that the Act is

not sufficiently detailed to meet the requirements under

Article 8 in the European Convention of Human Rights and

have referred to a judgment against the United Kingdom by

the European Court of Human Rights on 1 July 2008.

For further information, please refer to: http://www.fra.se

(in Swedish).

http://www.riksdagen.se/templates/R_PageExtended___

16402.aspx.

Bjorn Gustavsson Partner, [email protected] and Eva

Fredrikson Associate [email protected] from Advokatfirman

Vinge KB (Tel. þ46 8 614 30 00).

9. United Kingdom

9.1. New civil and criminal penalties for breaching dataprotection

The Criminal Justice and Immigration Act 2008 provides for

new powers, not yet in force:

� making it an offence to disclose intentionally or recklessly

personal data or repeatedly or negligently to allow personal

data to be disclosed (s.77);

� allowing the Information Commissioner’s Office (‘‘ICO’’) to

impose fines for breaching the data protection principles

deliberately or reckless in ways that are serious and likely to

cause substantial damage or distress (s.144, inserting a new

section 55A into the DPA).

The new Act: http://www.opsi.gov.uk/acts/acts2008/

ukpga_20080004_en_1.

9.2. Reviews recommend extending data protectionpowers to private sector

In the aftermath of last year’s loss of records on 25 million

people by HMRC, the government gave the ICO new data

protection powers over UK government departments.

Sir Gus O’Donnell’s June 2008 review of data handling

procedures in government extends these powers to cover

private sector contractors to whom those departments out-

source work. Stringent data security processes and obligations

are being implemented and apply to both existing and new

contracts, including:

� Encryption and compulsory testing by independent experts

of systems resilience.

� Mandatory annual training for staff dealing with personal

data.

� Spot checks by the ICO.

Following on from the above, the July 2008 government

commissioned Data Sharing Review has recommended

further extension of ICO powers, including:

(i) setting the maximum level of fines under the ICO’s new

section 55A DPA powers to mirror sanctions available to

the Financial Services Authority (‘‘FSA’’). The fine

schedule should include high, but proportionate, maxima

related to turnover. The FSA, last year, penalised two UK

financial services companies for seven figure amounts;

(ii) a statutory power to gain entry to private company

premises to carry out inspections.

Sir Gus O’Donnell’s Report: http://www.cabinetoffice.

gov.uk/w/media/assets/www.cabinetoffice.gov.uk/csia/dhr/

dhr080625%20pdf.ashx.

The Data Sharing Review: http://www.justice.gov.uk/docs/

data-sharing-review.pdf.

Mark Turner, Report Correspondent, Partner, mark.turner@

herbertsmith.com and Tim Gunn, Professional Support Lawyer

[email protected] from the London Office of Herbert

Smith LLP (Tel. þ44 20 7374 8000).

http://www.fra.se

http://www.riksdagen.se/templates/R_PageExtended____16402.aspx

http://www.riksdagen.se/templates/R_PageExtended____16402.aspx



http://www.opsi.gov.uk/acts/acts2008/ukpga_20080004_en_1

http://www.opsi.gov.uk/acts/acts2008/ukpga_20080004_en_1

http://www.cabinetoffice.gov.uk/%7E/media/assets/www.cabinetoffice.gov.uk/csia/dhr/dhr080625%20pdf.ashx



http://www.justice.gov.uk/docs/data-sharing-review.pdf

http://www.justice.gov.uk/docs/data-sharing-review.pdf




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